In the age of the internet and e-commerce, the domain name of a business holds tremendous value and is often an integral part of the identity of a business. Since a website can only have one domain name on the internet, there is no shortage of disputes which arise over ownership rights of domain names, particularly those closely affiliated with a registered or unregistered trademark.
What is Cyber-Squatting?
Cyber-Squatting occurs when someone has registered a domain name in which they have no legitimate business interest, and can sometimes involve setting up a fake website for a business. The reason could be that the registrant will then seek to sell the domain name to the legitimate owner of the business or trademark, or their competitor for a profit. Alternatively, it may be to syphon away business leads online to competitors for a fee, or for advertising revenues. Typo-Squatting is similar to Cyber-Squatting except the registered domain name is only slightly altered. It may be that the registrant has taken the .ca version, or maybe they’ve added an “s” to the end of the domain name, or misspelled the domain name in a way that often happens.
What do I do if my legitimate business interest in a domain name has been affected?
There are a variety of ways in which a business may be able to obtain recourse regarding a domain name which has been registered by someone who has no legitimate interest in the domain, some of which are discussed below:
Injunction
In order to immediately stop the registrant from continuing to divert clients through the illegitimate domain name, one can seek an injunction from an Ontario or Federal court to immediately cease the activity or make some other interim order until such time as the dispute over the domain name can be heard on its merits. It will often be important to take quick action to stop the reputational damage that may flow from an illegitimate and confusingly similar domain name.
Lawsuit
A civil lawsuit can be commenced either in the federal or provincial courts seeking declaratory relief, damages, and a transfer of the domain name to the legitimate owner. This may be a trademark infringement matter which would be within the jurisdiction of the federal court, or where the claim is based on use of an unregistered trademark, it may be made based on a claim of passing-off at common law made in provincial court.
Arbitration
The World Intellectual Property Organization (WIPO) provides for dispute resolution regarding domain names through the Uniform Domain Name Dispute Resolution Policy (UDRP). This body offers recourse for any domain names registered through the Internet Corporation for Assigned Names and Numbers (ICANN) including domain names ending in .com.
If the domain name at issue ends in .ca then the adjudication process typically occurs through the Canadian Internet Registration Authority (CIRA) which has it’s own dispute resolution policy (CDRP). The purpose of these adjudicative dispute resolution mechanisms as the Court of Appeal in Tucows.com co. v. Renner S.A., 2011 ONCA 548 (hereinafter “Tucows”), recognized, is “to provide a fast inexpensive and internet-friendly alternative to domestic legal systems and jurisdictions.”
The Court in Tucows held that such proceedings were never intended to replace formal litigation since it does not provide for discovery rights or except in the rarest of circumstances, live testimony. Further, neither WIPO or CIRA can award damages in any case, the only remedy that can be obtained through WIPO or CIRA is transfer or cancellation of the domain name at issue.
If your internet presence is being negatively affected by a fake website, a confusingly similar domain name, cyber-squatting or a domain name registered in bad faith, a lawyer with experience in intellectual property litigation should be contacted so that you can determine the appropriate course of action. It is often important to take immediate steps to prevent further damage to your online business reputation.
Do you need assistance with protecting your online reputation or enforcing your rights in a domain name? We can help. The lawyers at Gilbertson Davis LLP can act for businesses in domain name disputes.
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